The Patent Trial and Appeal Board (PTAB) has denied the University of Minnesota’s motion to dismiss six inter partes reviews (IPRs) brought by Ericsson, ruling on December 19 that the university had waived its Eleventh Amendment sovereign immunity from IPR by asserting the challenged patents in district court. The Board’s decision casts doubt on a related, controversial strategy pioneered in the fall by the Saint Regis Mohawk Tribe, which acquired patents from Allergan and SRC Labs, LLC and licensed them back in order to shield the patents from IPR using the tribe’s own sovereign immunity.
The University of Florida Research Foundation, Incorporated has filed suit against GE (1:17-cv-00171) and KoninklijkePhilips (1:17-cv-00170), accusing the two companies of infringing a single patent (7,062,251) generally related to the processing and display of medical data against the defendants’ data connectivity systems and products related to medical care. Both complaints assert that as an arm of the state of Florida, the university “enjoys sovereign immunity”, further “expressly reserv[ing] its sovereign immunity from any inter partes review” (IPR). In January, the Patent Trial and Appeal Board (PTAB) held for the first time, in an IPR filed by Covidien against the same university (IPR2016-01276), that the states’ Eleventh Amendment sovereign immunity extends to universities.